CTNF 18/835,862 CTNF 89850 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-35 Claim 1, 5, 6, 8 and 9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-3 of copending Application No. 18/287,099 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both recites a switch device having glass layer, a switch section with vertically movable contact, and operation in which pressing the glass layer electrically deforms the glass and switches the contact. The differences are limited to minor terminology variations and overlapping glass thickness (100-200 µm vs 20-150 µm), which can be a design choices rather than a patentably distinct invention . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15 AIA Claim s 1-7 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Shunsuke (JP2018200837) . Regarding claim 1 , Shunsuke teaches a switch device, comprising: a glass layer 4 made of tempered glass (page 3, lines 24-26 of the enclosed translation); and a switch portion (11, 12) arranged at a back surface of the glass layer, wherein a thickness of the glass layer is 100 µm or more and 200 µm or less (page 3, lines 14-16 of the enclosed translation), the switch portion includes a plurality of contacts (11, 12) that include a vertically movable contact, and in response to pressing of the glass layer, the glass layer elastically deforms, thereby performing switching of the plurality of contacts between being in a conductive state and in a non-conductive state (Fig 7 and page 4, lines 1-8 of the enclosed translation). Regarding claim 2 , Shunsuke teaches the switch device wherein the glass layer 4 is a chemically tempered glass including a compressive stress layer 3 (page 2, lines 12-15 of the enclosed translation). Regarding claim 3 , Shunsuke teaches the switch device wherein a compressive stress of the glass layer is 600 MPa or more (page 3, lines 13-15 of the enclosed translation). Regarding claim 4 , Shunsuke teaches the switch device wherein a frame is interposed between the glass layer 4 and the switch portion (11, 12), the frame includes a fixed portion and a movable portion that is supported by an elastic support 3 relative to the fixed portion, and in response to pressing of the glass layer, the glass layer elastically deforms to move the movable portion, thereby performing switching of the plurality of contacts between being in the conductive state and in the non-conductive state (annotated figure below and page 4, lines 1-8 of the enclosed translation). Regarding claim 5 , Shunsuke teaches the switch device wherein a support (element labeled as frame, in the annotated figure below) configured to support the glass layer 4 is included at a back surface of the glass layer (annotated figure below). Regarding claim 6 , Shunsuke teaches the switch device wherein the support is a part of or all of the switch portion (annotated figure below). Regarding claim 7 , Shunsuke teaches the switch device wherein the support is arranged outside the switch portion (11, 12) (the frame or the support is located outside the switch portion, see annotated figure below) . PNG media_image1.png 411 422 media_image1.png Greyscale Claim Rejections - 35 USC § 103 07-20-aia AIA The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-21-aia AIA Claim s 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura (US 20170140883) . Regarding claim 8 and 9 , Shunsuke does not teach the bonding layer or the resin layer is interposed between the glass layer and the switch. However, Kitamura teaches a switch device with glass layer 44, a switch portion 10, and a bonding layer or a resin layer 42 is interposed between the glass layer and the switch (Fig. 2 and paragraph 27). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings of Kitamura in the switch device of Shunsuke to provide a more secure switch device. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M SAEED whose telephone number is (571)270-7976. The examiner can normally be reached 10-8pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Luebke can be reached at 571-272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /AHMED M SAEED/Primary Examiner, Art Unit 2831 Application/Control Number: 18/835,862 Page 2 Art Unit: 2831 Application/Control Number: 18/835,862 Page 3 Art Unit: 2831 Application/Control Number: 18/835,862 Page 4 Art Unit: 2831 Application/Control Number: 18/835,862 Page 5 Art Unit: 2831 Application/Control Number: 18/835,862 Page 6 Art Unit: 2831 Application/Control Number: 18/835,862 Page 7 Art Unit: 2831
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